Can a Former Employee Use Your Company Logo?

What gives your company rights in its logo against a former employee?

Your company’s rights in its logo come from using it to identify your goods or services, whether or not you registered it. Not every design qualifies: in Minneapple Co. v. Normandin, 338 N.W.2d 18 (Minn. 1983), the Minnesota Supreme Court said protection “depends on the nature of the design and on how the design is used,” and that “the design must serve a primary purpose of indicating the origin of the product.” The logo identifies the business that uses it, so a former employee gains no right to it by having worked with it or drawn it.

Minnesota’s trademark act defines a trademark as “any word, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made or sold by that person and to distinguish them from goods made or sold by others” (Minn. Stat. § 333.18, subd. 1). A service mark is the same kind of symbol, “adopted and used by a person to identify that person’s services and to distinguish them from services of others.” The Deceptive Trade Practices Act is broader still. There, a mark is “a word, name, symbol, device, or any combination of the foregoing in any form or arrangement” (Minn. Stat. § 325D.43, subd. 5), and a trade name is the name “used by a person to identify the person’s business, vocation, or occupation and distinguish it from the business, vocation, or occupation of others” (subd. 8). Your logo, your company name, and your tagline can each qualify.

Who Owns a Logo an Employee Designed

Copyright answers a separate question: who owns the drawing itself. A logo an employee created as part of the job is “a work prepared by an employee within the scope of his or her employment” under 17 U.S.C. § 101. For a work made for hire, “the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright” (17 U.S.C. § 201(b)). A logo bought from an outside designer turns on the contract with that designer. A copyright lawsuit also has a filing condition: subject to the statute’s exceptions, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made” (17 U.S.C. § 411(a)).

How do Minnesota and federal law decide whether a former employee’s use is unlawful?

Minnesota and federal law both ask whether the former employee’s use is likely to confuse people about who stands behind the goods or services, or about whether the person is still connected to your company. Neither asks you to prove that a customer was in fact fooled.

Under the Deceptive Trade Practices Act, a person engages in a deceptive trade practice when, “in the course of business, vocation, or occupation,” the person does any of these (Minn. Stat. § 325D.44, subd. 1):

• “passes off goods or services as those of another”
• “causes likelihood of confusion or of misunderstanding as to the source, sponsorship, approval, or certification of goods or services”
• “causes likelihood of confusion or of misunderstanding as to affiliation, connection, or association with, or certification by, another”

To win, “a complainant need not prove competition between the parties or actual confusion or misunderstanding” (Minn. Stat. § 325D.44, subd. 2). For a fuller treatment of the statute, see Minnesota’s Deceptive Trade Practices Act.

Federal law asks the same kind of question. 15 U.S.C. § 1125(a)(1)(A) reaches use that “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” For a federally registered logo, 15 U.S.C. § 1114(1) adds a claim against use in commerce of “any reproduction, counterfeit, copy, or colorable imitation of a registered mark” where the use “is likely to cause confusion, or to cause mistake, or to deceive.”

The Eighth Circuit’s Confusion Factors

Federal courts in Minnesota weigh factors that the Eighth Circuit describes as “a list of nonexclusive factors for addressing a core inquiry.” In Select Comfort Corp. v. Baxter, 996 F.3d 925 (8th Cir. 2021), a Lanham Act appeal from Minnesota’s federal court, the Eighth Circuit listed six. They are the strength of your mark, the similarity of the two marks, how closely the products or services compete, the other side’s intent to pass off its goods as yours, incidents of actual confusion, and the type of product with its cost and conditions of purchase. The court added: “We have repeatedly emphasized that no one factor is controlling and different factors will carry more weight in different settings.” It also quoted its earlier rule: “Likewise, actual confusion is not essential to a finding of trademark infringement, although it is positive proof of likelihood of confusion.” When a former employee sells the same kind of service to your customers under your own logo, the similarity and competition factors can both point toward confusion.

The Minnesota Supreme Court’s Approach

For a Minnesota-registered mark, the owner must show the accused design is “identical to or so similar to the registered mark as to be likely to cause confusion or mistake on the part of a purchaser of the goods or services or to deceive such a purchaser as to the source or origin of the goods or services,” as the Minnesota Supreme Court read § 333.28 in Minneapple Co. v. Normandin, 338 N.W.2d 18 (Minn. 1983). The court added: “Likelihood of purchaser confusion also is an element of common-law unfair competition.” It reversed a judgment of infringement and unfair competition because the two souvenir designs differed substantially, and it assumed without deciding that the plaintiff’s design was protectable. Money remedies under § 333.28 carry a knowledge condition for some acts, covered under remedies below. More on how these claims proceed is in trademark infringement claims in Minnesota.

What counts as an accurate job history versus a false claim of affiliation?

An accurate, past-tense statement that a person worked for your company describes a connection that existed. Minnesota’s statute targets the opposite: it lists as a deceptive trade practice representing “that a person has a sponsorship, approval, status, affiliation, or connection that the person does not have” (Minn. Stat. § 325D.44, subd. 1, clause (5)).

The line shows in how the reference looks and what tense it uses. Entries like these describe a past job:

• Your company name typed in the same font as the rest of the resume or profile
• The title the person actually held, with start and end dates
• A description of past duties in the person’s own words

These entries suggest a present tie:

• Your logo graphic, stylized lettering, or brand colors next to the person’s name
• A present-tense title, or “Acme team,” “Acme-approved,” or “Acme-certified” language
• Marketing copy or slogans lifted from your website into the person’s new materials

The Minnesota act reaches conduct “in the course of business, vocation, or occupation,” so a profile used to market the person’s new business is the kind of use it addresses. In Minneapple, the defendant printed a copyright line with his own business name beneath his design, and the court said: “That effort is important to preventing customer confusion.” A former employee who clearly names the new business can serve the same purpose. Logo use by people still on your payroll raises different issues, covered in logo use in current employees’ social media posts.

When do old email signatures, business cards, and templates cross the line?

Old email signatures, business cards, letterhead, and branded proposal templates cross the line when they tell the recipient that the person still speaks for your company. A message sent from a new business under your signature block can cause “likelihood of confusion or of misunderstanding as to affiliation, connection, or association with” your company under Minn. Stat. § 325D.44, subd. 1, clause (3).

Materials that present a current connection include:

• An email signature with your logo, name, and the person’s old title, sent from a personal or new-company account
• Business cards, letterhead, or proposal templates with your branding, reused for new work
• A website bio or directory listing that still describes the person as part of your company

Federal law can count confusion that clears up before any sale. Select Comfort describes initial-interest confusion as “confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion,” and refers to “our general adoption of the theory of initial-interest confusion.” A customer who opens a proposal because it carries your logo, and only later learns the sender left, fits that description. The court noted one limit: “the theory of initial-interest confusion cannot apply in our Circuit where the relevant average consumers are sophisticated at the level of the careful professional purchasers who were at issue in Sensient.”

When you find these materials in circulation, I suggest saving each one with its date, sender, and recipient before you contact the former employee, because the copies show what was in use and when.

How does registering the logo change what you can do?

Registration adds claims and remedies, but it is not the source of your rights. The Deceptive Trade Practices Act and the federal false-association claim can protect an unregistered logo that qualifies as a mark, and Minnesota preserves common-law rights: “Nothing herein shall adversely affect a person’s rights or the enforcement of the rights in a mark acquired in good faith at any time at common law” (Minn. Stat. § 333.30). The same section limits those rights against a registrant: “the rights as against the registrant of the same or confusingly similar mark are limited to the areas of the person’s use established prior to the registration date and areas in which the person’s mark has become known prior to the registration date.”

Minnesota registration is a filing with the Secretary of State. Under Minn. Stat. § 333.20, subd. 1, “any person who adopts and uses a trademark or a service mark in this state may file in the Office of the Secretary of State an application for registration of that mark.” The application “shall be accompanied by a single specimen or facsimile of such mark” (subd. 3) and “a filing fee of $50, payable to the secretary of state” (subd. 4). A registered owner gains the infringement claim in Minn. Stat. § 333.28 and the remedies in § 333.29.

Federal registration opens the infringement claim in 15 U.S.C. § 1114(1). A federal registration “shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein” under 15 U.S.C. § 1115(a). The same subsection says it “shall not preclude another person from proving any legal or equitable defense or defect.” For the tradeoffs of relying on an unregistered logo, and the clearance search that should come before a filing, see those pages.

What remedies can a Minnesota employer get?

A Minnesota employer can get a court order stopping the use under the Deceptive Trade Practices Act, and money as well under the state act for a Minnesota-registered logo or under the federal Lanham Act. Each route sets its own conditions.

Deceptive Trade Practices Act

Under Minn. Stat. § 325D.45, subd. 1, “A person likely to be damaged by a deceptive trade practice of another may be granted an injunction against it under the principles of equity and on terms that the court considers reasonable. Proof of monetary damage, loss of profits, or intent to deceive is not required.” Attorney fees run both ways: the court may award them if “the party complaining of a deceptive trade practice has brought an action knowing it to be groundless,” or if “the party charged with a deceptive trade practice has willfully engaged in the trade practice knowing it to be deceptive” (subd. 2). The statute’s relief “is in addition to remedies otherwise available against the same conduct under the common law or other statutes of this state” (subd. 3).

Minnesota-Registered Logo

The owner of a Minnesota-registered mark “may bring an action to enjoin the manufacture, use, display, or sale of any counterfeits or imitations of the mark” (Minn. Stat. § 333.29, subd. 1). “The court may require the defendants to pay to the owner either or both of the following: (1) all profits derived from the wrongful manufacture, use, display, or sale; or (2) all damages suffered by reason of the wrongful manufacture, use, display, or sale.” It may order that imitations “be delivered to an officer of the court, or to the complainant, to be destroyed,” and it may award up to three times profits and damages plus reasonable attorney fees “if the court finds the other party committed the wrongful acts with knowledge or in bad faith or otherwise as according to the circumstances of the case.” For the copying and printing acts in clause (b) of § 333.28, profits and damages require knowledge “that such mark is intended to be used to cause confusion or mistake or to deceive.”

Federal Lanham Act

A plaintiff seeking a federal injunction “shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order” (15 U.S.C. § 1116(a)). The order may direct the defendant to file and serve a sworn report on how it complied “within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct” (§ 1116(a)).

Under 15 U.S.C. § 1117(a), a winning plaintiff may recover the defendant’s profits, its own damages, and the costs of the action. That recovery is “subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity.” Section 1111 sets one of those limits. Under 15 U.S.C. § 1111, a registrant may give notice with “the letter R enclosed within a circle, thus ®,” and “in any suit for infringement under this chapter by such a registrant failing to give such notice of registration, no profits and no damages shall be recovered under the provisions of this chapter unless the defendant had actual notice of the registration” (§ 1111). The other limit is in § 1114(1): for the acts in its clause (b), “the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.” To prove profits, the plaintiff need prove only the defendant’s sales, and the defendant “must prove all elements of cost or deduction claimed” under the same subsection. The court may award damages above the actual amount, “not exceeding three times such amount,” according to the circumstances of the case. Reasonable attorney fees are available to the prevailing party only “in exceptional cases” under that subsection. In Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), the Supreme Court held that a plaintiff proving a § 1125(a) violation need not show willfulness to win the defendant’s profits, while calling the defendant’s mental state “a highly important consideration.”

How should you respond when a former employee keeps using the logo?

A specific written request, backed by a record of what is in use, gives the former employee a clear chance to stop and leaves a record of what you asked for if the use continues. I suggest this order:

1. A record of the use. The first step is the set of saved copies described in the email-signature section, plus a note of any customer or vendor who asked whether the person still works for you.
2. A sorted list. The second step separates each item that uses your logo or suggests a present tie from plain past-tense references, because only the first group is worth demanding.
3. A specific written demand. The demand should name each item and the change you want (removing the logo from the signature, updating the website bio, returning or destroying the branded cards), with a reasonable date, because a specific request is easier to comply with and to check. Cease and desist letters for Minnesota trademark owners covers the letter itself.
4. Accurate statements to customers. Minnesota lists as a deceptive trade practice any conduct that “disparages the goods, services, or business of another by false or misleading representation of fact” (Minn. Stat. § 325D.44, subd. 1, clause (8)), so a note to customers should state only what is true and checkable.
5. A claim limited to the risky items. Under Minn. Stat. § 325D.45, subd. 2, a court may award fees against a complaining party that “brought an action knowing it to be groundless,” so a suit should rest on the items that suggest a current tie, not on an accurate resume line.

Why should final pay not wait on returned branded property?

Final pay should go out on the statutory schedule because Minnesota bars an employer from taking wages for unreturned property without the employee’s after-the-fact written consent or a court judgment. Holding the check to force the return of branded items, a laptop, or business cards adds a wage claim to your logo dispute.

Minn. Stat. § 181.79, subd. 1 says no employer shall deduct from wages “for lost or stolen property, damage to property, or to recover any other claimed indebtedness running from employee to employer, unless the employee, after the loss has occurred or the claimed indebtedness has arisen, voluntarily authorizes the employer in writing to make the deduction or unless the employee is held liable in a court of competent jurisdiction for the loss or indebtedness.” An authorized deduction has limits too: “Any authorization for a deduction shall set forth the amount to be deducted from the employee’s wages during each pay period” (subd. 1(a)), and “A deduction may not be in excess of the amount established by law as subject to garnishment or execution on wages” (subd. 1(b)). The penalty is liability “for twice the amount of the deduction or credit taken” (subd. 2).

The timing rules differ by how the job ended. After a discharge, “the wages or commissions actually earned and unpaid at the time of the discharge are immediately due and payable upon demand of the employee” (Minn. Stat. § 181.13). The statute adds: “If the employee’s earned wages and commissions are not paid within 24 hours after demand, whether the employment was by the day, hour, week, month, or piece or by commissions, the employer is in default.” After a resignation, earned wages “shall be paid in full not later than the first regularly scheduled payday following the employee’s final day of employment,” unless a collective bargaining agreement provides differently (Minn. Stat. § 181.14, subd. 1), and subd. 4 repeats the deduction bar. Subd. 4 also allows extra time for one group: “In cases where the discharged or quitting employee was, during employment, entrusted with the collection, disbursement, or handling of money or property, the employer shall have ten calendar days after the termination of the employment to audit and adjust the accounts of the employee before the employee’s wages or commissions shall be paid as provided in this section.” More detail is in unlawful deductions from final paychecks.

When can an owner’s failure to act lead to abandonment of the mark?

Minnesota and federal law both treat a mark as abandoned when a course of the owner’s conduct, including what the owner fails to do, causes the mark to lose its significance as a mark. Under Minn. Stat. § 333.18, subd. 6, a mark is considered abandoned “when a course of conduct of the owner, including acts of omission as well as commission, causes the mark to lose its significance as a mark.” The federal definition in 15 U.S.C. § 1127 uses nearly the same words: “When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.”

The test is the owner’s course of conduct, not one event. I suggest responding to each misuse you learn about, even with a short letter, because a file showing consistent responses is evidence that your logo still points to one business.

What should employment agreements and offboarding cover about the logo?

Employment agreements and exit steps should state that the employee’s right to use your logo, name, and branded templates ends with the job, and that a plain, past-tense description of the work remains permitted. Clear terms can make a later demand shorter and easier to support.

Useful terms include:

• Return or destruction of business cards, branded templates, and marketing pieces at separation
• An end to use of your logo, signature block, and brand assets, with a stated allowance for accurate job history
• A deadline to update website bios, directory listings, and profiles that describe the person as part of your company
• A written assignment to the company of logos and designs the person creates for it, because 17 U.S.C. § 201(b) makes the employer the owner of a work made for hire, and a signed writing covers a design whose status as one could be disputed

Minnesota’s noncompete ban should shape the drafting. Minn. Stat. § 181.988, subd. 1 defines a covenant not to compete as “an agreement between an employee and employer that restricts the employee, after termination of the employment, from performing” certain work, and it states: “A covenant not to compete does not include a nondisclosure agreement, or agreement designed to protect trade secrets or confidential information.” It also excludes nonsolicitation agreements by name. “Any covenant not to compete contained in a contract or agreement is void and unenforceable” (subd. 2(a)). A clause that governs only use of your logo and name does not, by its words, restrict anyone from performing work, and I suggest drafting it so it cannot be read as a restriction on work, because that reading would put it under the ban. Subdivision 2(c) says nothing in that subdivision “shall be construed to render void or unenforceable any other provisions in a contract or agreement containing a void or unenforceable covenant not to compete.” For what remains available after the ban, see alternatives to noncompetes, and for the exit sequence, the offboarding checklist.

Protecting Your Logo After an Employee Leaves

A former employee may describe the job truthfully, and your company may stop use of its logo, name, or branded materials that suggests the person still represents you. Minnesota’s Deceptive Trade Practices Act protects a logo that qualifies as a mark, registered or not, without proof of actual confusion. Minnesota registration adds money remedies under § 333.29. The Lanham Act allows profits and damages for registered and unregistered marks, subject to sections 1111 and 1114 and the principles of equity. A written record of each misuse supports the demand and is evidence that the logo still points to one business. Final pay should go out on schedule whatever is still unreturned. More guidance is collected in my Minnesota trademark practice materials. If a former employee is using your logo or signature block, email me at [email protected] with screenshots and the dates of employment, and I can tell you which items are worth demanding and what to ask for.